DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Drawing
The drawings do not meet the requirement of 37 CFR 1.84 because the shadows shown under the figures and the gray boxed background interfere with clarity of the claim. Photographs submitted in lieu of ink drawings in design applications must not disclose environmental structure but must be limited to the design claimed for the article. The background should be clean and clear, devoid of all extraneous subject matter or borders. (37 CFR 1.152, MPEP 1503.02: Drawing)
Corrected drawing sheets are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as "amended." If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either "Replacement Sheet" or "New Sheet" pursuant to 37 CFR 1.121 (d). If the examiner does not accept the changes, the applicant will be notified and informed of any required corrective action in the next Office action.
When preparing new drawings in compliance with the requirement therefor, care must be exercised to avoid introduction of anything which could be construed to be new matter prohibited by 35 U.S.C. 132 and 37 CFR 1.12.
Claim Rejections- 35 USC § 112(a) and (b)
The claim is rejected under 35 U.S.C. 112(a) and (b) or pre-AIA 35 U.S.C. 112, first and second paragraphs, as the claimed invention is not described in such full, clear, concise and exact terms as to enable any person skilled in the art to make and use the same, and fails to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or, for applications subject to pre-AIA 35 U.S.C. 112, the applicant) regards as the invention.
The claim is indefinite and non-enabling because the scope of the claimed design cannot be determined without conjecture. It is unclear whether the midsole and sole are a part of the claimed design. There are broken lines dividing the upper from the midsole and the midsole from the sole but no proper distinction of claimed areas. Areas of the shoe that are not a part of the design should be encased in broken lines with the area grayed out/ whited out in the photographic disclosure. Clarity is needed.
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All the above issues have caused indefiniteness in the claim. Applicant is advised to review the drawings and compare them carefully with each other in order to determine all discrepancies between the views.
The necessity for good drawings in a design patent application cannot be overemphasized. As the drawing constitutes the whole disclosure of the design, it is of utmost importance that it be so well executed both as to clarity of showing and completeness, that nothing regarding the design sought to be patented is left to conjecture. An insufficient drawing may be fatal to validity (35 U.S.C. 112, first paragraph). Moreover, an insufficient drawing may have a negative effect with respect to the effective filing date of a continuing application.
To overcome this rejection, it is suggested that applicant submit high quality line drawings which show the appearance and detail of the design clearly and accurately. It may not possible to add any other drawing views nor may applicant add a written descriptions of the claimed design invention needed for full disclosure, without introducing new matter, which is impermissible under 35 USC § 112, (a).
Conclusion
In summary, the claim stands rejected under 35 U.S.C. 112(a) and (b). The references are cited as cumulative art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RASHIDA C WALSHON whose telephone number is (571)272-8702. The examiner can normally be reached 9:30am to 6:00pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michelle E. Wilson can be reached on (571) 272-7639. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Rashida C. Walshon/Primary Examiner, Art Unit 2926